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Avoiding 'genericide': how and when does a trademark become generic?

Certain trademarks – such as ASPIRIN, ESCALATOR, CELLOPHANE, LAUNDROMAT and THERMOS – have become 'generic' marks. In other words, these once distinctive and functioning trademarks have, over time, come to be descriptive or to define a general class of goods and thus no longer serve to identify those of a particular manufacturer.

Definition of 'trademark' under Trademarks Act

Historically, and in common law, a 'trademark' was considered and defined by the UK and subsequently the South African courts as a badge of origin or source identifier – that is, an indicator of the origin of the relevant goods or services. Thus, the basic function of a trademark was to indicate the manufacturer or originator of the goods or services. As trademark law developed, in order for a mark to be registered, this basic function expanded to include the function of distinguishing the goods or services of one business from the same or similar goods or services of another business in the course of trade.

Under the Trademarks Act (194/1993), a 'trademark' is defined as a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other party.

Section 9 of the act requires that in order for a trademark to be registrable, it must be capable of distinguishing the goods or services of the party in respect of which it is registered or proposed to be registered from the goods or services of another party. A mark can be considered to be capable of distinguishing in this manner either inherently or by reason of prior use. However, a mark that is not (or no longer) capable of distinguishing in this manner cannot serve the basic function of a trademark, as above, and hence cannot be registered as a trademark in accordance with Section 10 of the act.

Examples of such marks or words are:

words of a descriptive nature;

laudatory words;

words that are reasonably required for use in a particular trade; and

words that serve to designate the geographical origin or other characteristics of goods or services.

Such marks or words, which are incapable of distinguishing goods or services within the meaning of Section 9 of the act, are either unregistrable or, if already registered, liable to be removed from the register.

However, there are also marks which are initially capable of distinguishing goods or services and hence qualify for registration, but later become incapable of doing so. Once a trademark has lost this ability or function, it can no longer act as a trademark. Accordingly, Section 10 of the act provides that a trademark that is incapable of distinguishing within the meaning of Section 9 is liable to be removed from the trademarks register.

Trademark owners must strive to prevent their trademark from becoming generic and hence falling into the public domain. However, unless the High Court or registrar formally finds a trademark to have fallen into the public domain, whether it has become a generic trademark will be a matter of conjecture. For example, in 2000 the trademark LIQUORICE ALLSORTS was found by the Supreme Court of Appeal to have become a generic name for a particular liquorice confectionery. In contrast, other trademarks may appear to have become descriptive, but until there has been a formal finding in this regard, such trademarks will remain valid.

Preventing word marks from becoming generic

A word mark must always be an adjective and must not be in a possessive or genitive form. Examples include:

LUX soap rather than LUX;

a BMW car rather than a BMW; and

a GOOGLE search rather than to GOOGLE a search.

However, marketing forces exert considerable pressure on brand owners to use trademarks as nouns in order to shorten expressions.

In support of the above correct usage, most astute trademark owners adopt a strict protocol or profile for the correct usage of their trademarks – for example, by:

using a particular font or corporate colour;

positioning their trademark in a particular position on the packaging; and

using other specifications to ensure the consistent and correct use of their trademarks.

In addition, parties should use the letters TM or R/REG when the mark is registered, which are usually included in the upper-right corner of a trademark.

Most importantly, trademark owners need to police the unauthorised use of their trademarks by third parties in order to avoid the general or generic use of their marks, as even registered trademarks can become descriptive in this way. This can also apply to well-known registered trademarks.

The International Trademark Association's Handy Guide provides further information on how trademark owners can prevent their marks from becoming generic.

Unique situations

In the following situations the circumstances are more complex, as discussed in the South African Law of Trade Marks (Webster and Page).

Name of article as trademark
In South African Registrar of Trademarks v Wassenaar (1957) the trademark applicant applied to register the trademark RONPHA for a new hybrid grass. The Registrar of Trademarks refused to register the trademark, which was ultimately appealed to the Appellate Division (now the Supreme Court of Appeal). The Appellate Division found that the applicant had used the word RONPHA not as a trademark, but rather to designate his new grass cultivar. Justice Reynolds is reported to have said:

"Hence it seems to me that the word "RONPHA", standing by itself, only meant at most a grass associated with the name of the respondent as an originator or producer, and naturally a seller of it. It did not, standing by itself, indicate that that grass was to be distinguished from the grass of other sellers who may have obtained their supplies from the respondent and then cultivated RONPHA for sale."

Plant trademarks
A nursery can register a trademark for its goods as a mark of origin. However, it must be careful to use the trademark for the purpose of distinguishing its plants – for example, from the same variety of plant produced by others – and not for the purpose of distinguishing a particular variety produced by it from the other varieties produced by it.

Name of unique article
If a new article has been made (and not patented), any party may copy it and call it by the same descriptive name that the maker has given the article. If the article has been patented, another party may copy it and call the article by the name that the maker has given it only when the patent has lapsed or expired.

New and known articles
There is an important legal distinction to be made between new and known articles. Although trademarks can be registered in respect of both article classes, in the absence of patent or other rights for new articles, there is a risk that – because the article generally has no other name – the generally descriptive name given by the originator (and which it will often claim is a trademark) will be regarded by the public as the name of the new article and not as a trademark. One way of avoiding this risk is for the originator to give the article a second non-descriptive name that can act as a trademark. Unfortunately, most originators prefer to ignore or avoid this course of action – often to their disadvantage.

Comment

In light of the above, it seems that a trademark can become generic even with it is being used and promoted in good faith. As such, trademark owners should have a detailed protocol for the correct and disciplined use of their marks that is applied strictly with regard to both internal use by staff and external use for public relations purposes.

Most importantly, trademark owners must be vigilant to ensure that their trademarks are not being used (or abused) without authority by third parties. Whenever there is unauthorised third-party use of a trademark, the trademark owner should not hesitate to seek advice from their trademark attorney. This will hopefully save the trademark from 'genericide' – that is, from becoming generic and losing all rights that may have been developed at great cost and effort.